David beats pod Goliath

Marsha Jacobs (MIS Australia) |
Feb. 23, 2009

Apple, which makes the cult music player, iPod, has lost its bid to trademark "POD" in Australia

SYDNEY, 23 FEBRUARY 2009 - Apple, which makes the cult music player, iPod, has lost its bid to trademark "POD" in Australia because of an objection by a company which sells an electronic device called POD, which translates sound waves from an electric guitar into an amplifier.

Despite selling only 2000 units of its product in 10 years, a Californian company called Line 6 has blocked an Apple attempt to register the name POD in Australia in relation to portable electronic devices. It argued that it had a pre-existing trademark in the same category.

In late January, Australian Trade Marks Office hearing officer Iain Thompson rejected Apple's application. He acknowledged the iPod "may approach the status of being a brand icon" and "could not have escaped the attention of many consumers in Australia".

He said Line 6's POD had established a reputation in the Australian music industry and its trademark registration predated Apple's.

"[Line 6's goods] are electronic devices which take signal from electronic guitars . . . and digitally process that signal to 'tone', 'shape' or modify the sound which is, or may be, further processed through an amplifier," Mr Thompson said.

He said sales of the POD were "respectable" given its niche market among "musical cognoscenti".

"While the evidence does not show particularly strong sales . . . participants in the musical industry are generally informed about the products available to them to enable them to perform."

Makers of the POD argued that if Apple was also allowed to register the trademark, it was reasonable to assume Apple's product would be promoted in the same way as its iPod, for which $15 million was spent on advertising in 18 months.

"Such pervasive marketing would overwhelm and erode Line 6's registered mark and destroy its reputation in POD," lawyers submitted.

In turn, Apple's lawyers argued that POD was "digital signal processing hardware" and did not fall into the "portable electronic devices" class of trademark it was registered in.

Mr Thompson also rejected this argument, saying that Apple's iPod also relied on "digital signal processing hardware". He ordered Apple to pay Line 6's costs.